Vol. 135, No. 50 — December 15, 2001

Regulations Amending the Patent Rules

Statutory Authority

Patent Act

Sponsoring Department

Department of Industry

REGULATORY IMPACT ANALYSIS STATEMENT

Description

The purpose of these relatively minor amendments is to ensure that the Canadian Patent Rules conform with Canada's international obligations under the Patent Cooperation Treaty (PCT).

The PCT is an agreement for cooperation in the field of patents under the purview of the PCT Union Assembly, which is one of many assemblies administered by the World Intellectual Property Organization (WIPO) in Geneva. The Treaty establishes a patent filing procedure, which permits a patent applicant with one international application to file in several member countries. The eventual granting of patents is under the authority of intellectual property offices in each Member State — in Canada's case, the Canadian Intellectual Property Office (CIPO). The PCT entered into force in Canada on January 2, 1990, and currently consists of 115 Contracting States, including all of Canada's key trading partners.

The amendments are a direct result of a unanimous decision taken by the PCT Assembly at WIPO in September 2001 to modify the Treaty and thereby extend the time limit for transmitting a PCT application to national patent offices from 20 to 30 months, irrespective of whether the applicant has requested an international preliminary examination. The anticipated decrease in the requirement to perform such examinations will assist offices in coping with a dramatic global increase in workload. This modification will be effective April 1, 2002.

This modification to the PCT necessitates corresponding amendments to the time limits prescribed in the Canadian Patent Rules for submitting a PCT application to CIPO.

Alternatives

In order to obtain the benefits of the modifications to the PCT, there is no alternative but to amend the Canadian Patent Rules.

Benefits and Costs

Applicants will experience a greater flexibility by being allowed an additional 10 months to decide whether or not to file an application in offices of participating Member States. In addition, they will not need to spend the energy and financial resources for an international preliminary examination that they do not feel is required.

No financial costs to applicants are associated with these amendments, nor are there any environmental effects.

Consultation

The amendments are required to ensure conformity with our international obligations under the PCT. At the PCT Assembly meeting, many international and national associations representing patent professionals and private inventors were in attendance and were provided with the opportunity to make observations. In that forum, representatives from the International Association for the Protection of Intellectual Property (AIPPI), the International Federation of Industrial Property Attorneys (FICPI) and the International Federation of Inventors' Associations (IFIA) expressed support for this modification.

Consultations have been held with the key stakeholders, i.e. the Intellectual Property Institute of Canada (IPIC), the Canadian chapter of the International Federation of Industrial Property Attorneys (FICPI), the Canadian chapter of the International Association for the Protection of Intellectual Property (AIPPI) and the intellectual property group of the Canadian Bar Association (CBA). There has been general support for the amendments.

Compliance and Enforcement

No compliance mechanism is required, since applicants using the patent system are seeking a benefit.

Contact

J. Scott Vasudev, Canadian Intellectual Property Office, Place du Portage, Phase 1, 8th Floor (803-A), 50 Victoria Street, Hull, Quebec K1A 0C9, (819) 997-3055 (Telephone), (819) 994-1989 (Facsimile), vasudev.scott@ic.gc.ca (Electronic mail).

PROPOSED REGULATORY TEXT

Notice is hereby given that the Governor in Council, pursuant to section 12 (see footnote a) of the Patent Act, hereby makes the annexed Regulations Amending the Patent Rules.

Interested persons may make representations with respect to the proposed Regulations within 30 days after the date of publication of this notice. All such representations must cite the Canada Gazette, Part I, and the date of this notice and be addressed to J. Scott Vasudev, Canadian Intellectual Property Office, Place du Portage — Phase I, 8th Floor (803-A), 50 Victoria Street, Hull, Quebec K1A 0C9.

Ottawa, December 13, 2001

RENNIE M. MARCOUX
Acting Assistant Clerk of the Privy Council

REGULATIONS AMENDING THE PATENT RULES

AMENDMENTS

1. (1) Paragraphs 58(3)(a) and (b) of the Patent Rules (see footnote 1) are replaced by the following:

(a) the 30-month period after the priority date; or

(b) where the applicant pays the additional fee for late payment set out in item 11 of Schedule II, the 42-month period after the priority date.

(2) Section 58 of the Rules is amended by adding the following after subsection (8):

(9) An international application may not become a PCT national phase application where:

(a) before April 1, 2002, the 32-month period after the priority date has expired;

(b) the applicant had not complied with the requirements of subsection (1) and, where applicable, subsection (2) before the expiry of that period; and

(c) an election of Canada was not made before the expiry of the nineteenth month after the priority date.

2. (1) Paragraphs 62(2)(a) and (b) of the Rules are replaced by the following:

(a) the 36-month period after the priority date; and

(2) Section 62 of the Rules is amended by adding the following after subsection (3):

(4) For greater certainty, where an application was, before April 1, 2002, deemed to have been abandoned pursuant to subsection (1), the application may not be reinstated in accordance with subsection 73(3) of the Act after the expiry of the 12-month period after the date on which the application was deemed to be abandoned.

COMING INTO FORCE

3. These Regulations come into force on April 1, 2002.

[50-1-o]

Footnote a

S.C. 1993, c. 15, s. 29

Footnote 1

SOR/96-423

NOTICE:
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